A business puts a lot of time and effort creating their brand, and a trademark is a significant part of that strategy. Mistakes are often made in the trademark registration process, however, and those mistakes can lead to delays, denials, and disappointments.
At Heritage Law Office, our intellectual property attorney in Minnesota will review your intellectual property, including trademarks, and advise you on all the steps you need to take to protect your work and your business. We handle the paperwork, the research, and more to make sure our clients' expectations are exceeded and their businesses benefit because of it. Contact us at 414-253-8500 to schedule a consultation and learn more.
Understanding Trademarks
Trademarks are one of the most common and critical ways to grow a business and build a solid, loyal customer-base. The United States Patent and Trademark Office (USPTO) defines a trademark as
any word, phrase, symbol, design, or a combination of these things that identifies your goods and services. It's how customers recognize you in the marketplace and distinguish you from your competitors.
In order to be trademarked, the word, phrase, symbol, or design must be distinctive. It cannot be generic and must not be similar to a trademark that is already in use.
A trademark does not have to be registered. However, registration provides more extensive rights and protections to the owner. For example, if a small business begins to grow outside of a specific geographic area, trademark registration can provide nationwide rights and protection.
The Process to Register a Trademark in Minnesota
There are several steps that must be taken timely and properly to register a trademark. A person or entity must apply for it. Once the application is submitted, it is examined. If approved, the trademark is published. Upon publication, the trademark is officially registered and protected. Each case may vary to some extent, but generally, the below steps are a part of this process.
Trademark Identification and Filing Basis
The process to register a trademark is relatively straightforward. It is important, however, to ensure that the application you submit is thorough and meets the requirements.
Your trademark must be distinctive. Researching the USPTO website, though daunting, can help you discover whether there is another trademark that is like, or similar to, the trademark you wish to register. Aside from ensuring its uniqueness, you must also:
- Identify if your trademark is a design mark, character mark, or sound mark; and
- Determine the types of services and goods to which it will apply.
The USPTO ID Master List will help you determine acceptable identification of services and goods – these services and goods are also referred to as trademark classes. It cannot be stressed enough how important it is to describe in full detail the trademark classes to which your trademark will apply because your trademark will only apply to these specific products or services and nothing else. For example, if you only apply to use the trademark for cosmetics, you cannot use it for soaps, unless you apply for the latter as well.
Next, you must determine the correct “filing basis” for your trademark. The requirements which must be met to proceed to registration depends on the chosen filing basis. There are four possible bases.
- Use In Commerce Basis: used when your mark is currently being used in commerce with your services and/or goods
- Intent-To-Use Basis: your intention is to use your mark with your services and/or goods in the near future
- Foreign Registration Basis: you already own a foreign registration of the same mark for the same services and/or goods in your country of origin
- Foreign Application Basis: also known as the foreign priority basis, this basis is used when you already own an application that was filed in a foreign country that was filed within six months of your application in the United States for the same mark and the same services and/or goods.
Our intellectual property attorney at Heritage Law Office is well-versed in this step and can thoroughly and comprehensively make the necessary identifications and determinations, saving you time and money.
Trademark Filing Bases Explained
| Filing Basis | Description |
|---|---|
|
Use In Commerce |
For trademarks already being used in commerce. Proof of use must be submitted with the application. |
|
Intent-To-Use |
For trademarks that the applicant intends to use in commerce in the future. A Statement of Use will be required later. |
|
Foreign Registration |
If the applicant has already registered the mark in another country, this basis can be used. |
|
Foreign Application |
Used when the applicant has a trademark application filed in another country within the last six months. |
Trademark Application and Approval
Once you have identified your trademark and filing basis, it is time to file the application. This is best accomplished online by creating an account with USPTO. Fees to file the application can range from $250-$350 per class of services or goods.
Examination Period
After submission of the application, it's a waiting game for approval. If any discrepancies or other issues are found with your application, you will receive a letter to that effect. To keep your application active, it is necessary that you reply to this letter. Again, it is here that our intellectual property will benefit you: we can help avoid issues from arising and, thus, avoid delays.
Approval Status and Opposition Period
Once approved or denied, you will be notified by letter. Approved applications are published in the “Trademark Official Gazette.” This newsletter is issued by the USPTO, and gives anyone that believes they may be harmed by the registration of your trademark 30 days to oppose it by filing a Notice of Opposition.
Notice of Allowance and Registration
If there is no opposition to your trademark, your trademark will likely be registered within the next 3-4 months if it has a commerce filing basis.
However, if your application is based on intent to use the trademark in commerce, your trademark will not yet be registered, but you will receive a Notice of Allowance. This notice will tell you when you must submit a Statement of Use and a specimen of how your trademark is being used in commerce. Then, upon acceptance of your Statement of Use, your trademark will be registered.
Steps in the Trademark Registration Process
| Step | Description |
|---|---|
|
1. Trademark Search |
Conduct a thorough search to ensure the trademark is not already in use in a similar category. |
|
2. Filing the Application |
Submit the trademark application to the USPTO along with the required filing fee. |
|
3. Examination by USPTO |
The application is reviewed by an examining attorney to ensure it meets all legal criteria. |
|
4. Publication for Opposition |
If approved, the trademark is published in the Official Gazette to allow any oppositions for 30 days. |
|
5. Registration |
If no oppositions are raised, the trademark is officially registered and a certificate of registration is issued. |
Trademark Registration FAQ
Questions swirl around the trademark registration process because it can be extensive and confusing. Here, common questions often asked by first-time clients are answered so that you can be informed and make smart decisions for your business.
How Long Does the Registration Process Take?
The time it takes to register a trademark varies. Typically, however, the process takes 12 to 18 months. Once the application is submitted, it takes roughly 4 to 6 months alone to review it.
What is the Biggest Reason Leading to Denied Trademark Applications?
The top reason trademark applications are denied is this: they are too similar to an already-existing, registered trademark. The risk of confusion between the two trademarks means yours gets denied because the other one is already registered. Making sure to conduct a complete search is critical to a smooth process.
How Can I Make a Trademark Strong?
Strong trademarks are those that do not use merely descriptive or generic words. Descriptive words like creamy, smooth, or bold are not distinctive enough. Generic words like hotel, laundry services, or tee-shirt business are not distinctive enough.
Strong trademarks are those that include fanciful, arbitrary, or suggestive trademarks:
- Fanciful trademarks are those with made-up words, like Pepsi® and Exxon®
- Arbitrary trademarks are those with actual words with no association of the goods or services, like Apple®
- Suggestive trademarks are those with words suggesting the quality of the goods or services but do not state the actual good or service, like Coppertone® for suntan oil
An intellectual property lawyer can help you get creative and ensure your trademark is a strong one. This allows you to avoid a denied application and improve branding strategies.
Do I Need a Lawyer to Register my Trademark?
Foreign-domiciled trademark applicants and registrants must be represented by a United States licensed attorney. This is not required for trademark applicants and registrants domiciled in the United States. It is required that all applicants maintain a current domicile address in all trademark filings.
Even when it is not required that an applicant be represented by an attorney, the benefits of legal representation can not be understated. Our intellectual property attorney in Minnesota, at a minimum, will prepare accurate applications and timely respond to legal inquiries from the USPTO.
Contact a Trademark Registration Lawyer in Minnesota Today
Trademark registration offers protection, but you must submit a thorough, comprehensive, adequately supported application. At Heritage Law Office, our trademark attorney in Minnesota will work with you every step of the way. Contact us today to schedule a consultation either by filling out the online form or calling us at 414-253-8500.
More Frequently Asked Questions (FAQs)
1. What are the benefits of registering a trademark?
Registering a trademark grants the owner exclusive rights to use the mark on or in connection with the goods and services listed in the registration. This helps to prevent others from using a similar mark in a way that could cause confusion among consumers. Additionally, a registered trademark can be a valuable asset for a business, as it enhances the brand's credibility and can be licensed or sold.
2. Can a trademark be registered internationally?
Yes, trademarks can be registered internationally. One way to register a trademark in multiple countries is through the Madrid System, which allows the filer to submit a single application and designate other member countries where the trademark should be protected. Alternatively, a trademark can be registered in individual countries by filing directly with each country's trademark office, following their specific legal requirements.
3. What is the difference between a standard character mark and a stylized/design mark?
A standard character mark consists of words, letters, or numbers without any specific font style, size, or color, providing broad rights to use the mark in any manner of presentation. In contrast, a stylized or design mark includes particular stylized features or graphical elements. The protection for a stylized/design mark typically extends only to the specific graphic representation of the trademark.
4. What should I do if someone is using my trademark without permission?
If someone is using your trademark without permission, it may constitute trademark infringement. The first step is usually to contact a legal professional who can assess the situation and provide guidance on the best course of action. This might include sending a cease and desist letter to the infringer, negotiating a licensing agreement, or filing a lawsuit for trademark infringement.
5. How can I ensure my trademark remains protected?
To ensure your trademark remains protected, you must actively use it in commerce and monitor its use by others. It's also important to renew your trademark registration according to the guidelines provided by the trademark office, typically every ten years. Additionally, taking legal action against unauthorized use or infringement can help reinforce the rights granted by the trademark registration.